New Trade Mark Tribunal Practice Note

As of the 3rd January, there are new IPO guidelines to adhere to when submitting a statement of case as part of a trade mark opposition or application for invalidation. The new rules apply to a statement of case filed with forms:
TM7 ‘Notice of opposition and statement of grounds’
TM7F ‘Notice of fast track opposition and statement of grounds’
TM26(I) ‘Application to declare invalid a registration or a protected international trade mark (UK)’.

The new practice dictates that if a statement of case with a notice of opposition or application for invalidity is filed, it must have numbered paragraphs. Additionally, the term ‘Please see attached statement of case’ on the opposition/invalidation forms will no longer be accepted. Instead, if the filer chooses to attach a statement of case rather than filling in the answers in the correct space provided in the form, they must insert the relevant paragraph number.

According to the IPO, this change has been implemented as a result of “a growing increase in the number of cases where parties, when completing the forms, are not answering the questions by inserting the information required in the boxes provided. Instead, the registrar is being referred to the statement of case.” It continues: “It is often difficult, especially when the paragraphs have not been numbered, to clearly identify where the relevant information appears within the statement of case. This can lead to additional work and costs for the registrar and the parties.”

This update to practice should assist with the efficiency of the trade mark opposition and application for invalidation procedures.